DOMAIN DISPUTES
rights; or one that has been used in a manner which has taken unfair advantage of, or has been unfairly detrimental to, the complainant's rights. Tese will include domains registered to be sold at a profit to the complainant, or to be used commercially taking unfair advantage of complainant’s reputation.
“Fair use” may include sites operated solely in tribute to, or in criticism of, a person or business, but case law suggests that this defence is not open when the registrant makes some financial gain from using the domain name, even for the purpose of defraying the expense of maintaining the website. Trading in domain names for profit, and holding a large portfolio of domain names are, of
themselves, lawful activities, but the expert will review each case on its merits.
Similarly, sale of traffic (ie, connecting domain names to ‘parked’ pages and earning click-per- view revenue) is not, per se, objectionable under the policy. However, the expert will take into account factors such as the nature of the domain name, the nature of the advertising links on any parked page associated with the domain name; and the fact that the use of the domain name is ultimately the respondent’s responsibility.
Te Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP) applies to all generic top-level domains (gTLDs)—at time of writing these are .com, .net, .org, .aero, .asia, .biz, .cat, .coop, .info, .jobs, .mobi, .museum, .name, .pro, .tel, .travel—as well as to certain country code TLD (ccTLD) names. For some time, ICANN has required any new registry to offer UDRP.
Although the World Intellectual Property
Organization (WIPO) is not the only dispute resolution provider, an extremely good place to start is WIPO’s website, which links to the WIPO Arbitration
“IT SHOULD BE NOTED THAT A REGISTRANT MAY ESTABLISH ‘RIGHTS AND LEGITIMATE INTEREST’ BY SHOWING THAT THE DOMAIN NAME IS A MARKETABLE COMMODITY IN ITS OWN RIGHT.”
complainant for a consideration in excess of any out-of-pocket expenses directly related to the domain name the UDRP panellist held that the respondent had used the domain name in bad faith, as defined in the policy.
Under the policy it is for the complainant to establish its case. In a more recent case (Case No. D2011-1034,
ange.com) the respondent successfully argued (i) that he had rights or a legitimate interest in the domain name because the domain name (the French word for ‘angel’), was a good name for a domain name that could be sold on to a third party, although not necessarily the complainant or any of its competitors; (ii) that he was not aware of the complainant or any of its competitors at the time of registration; (iii) that the mere act of offering to sell a domain name is not, by itself, evidence of bad faith; and (iv) that to succeed, the complainant must show that the trademark relied upon is well-known, or that the respondent knew of the complainant and its trademark at the time the domain name was registered.
Under ICANN, the complainant must prove that the domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights; that the registrant has no rights or legitimate interests in respect of the domain name; and that it has been registered, and is being used, in bad faith. All these elements must be proved.
and Mediation Center
with information regarding the specific gTLD registries and polices applicable to disputes affecting those domains. WIPO also provides a domain name dispute resolution service for 65 ccTLDs, with details on its website at
http://www.wipo.int/amc/en/
58
Te first UDRP decision (WIPO Case D99-001
worldwrestlingfederation.com) discussed the questions of registration and use. A domain name must not only be registered in bad faith, but it must also be used in bad faith—in this case the respondent did not have a website corresponding to the registered domain name. Could it then be said to have ‘used’ the domain name? Paragraph 4(b)(i) of the policy provides that circumstances indicating that the registrant had acquired the domain name primarily for the purpose of selling it on to the complainant shall be evidence of bad faith. Because the respondent had offered to sell the domain name to the
Trademarks Brands and the Internet Volume 1, Issue 2
Te complainant must establish its case, and is generally expected to show that the respondent had knowledge, or at least was in a position to have had knowledge, of the relevant trademark at the time of registration, or to provide sufficient information from which that inference may be drawn. In this case the complainant did not provide any evidence from which the UDRP panellist could infer the likelihood that
the
respondent was aware of the complainant’s trademark prior to the date of registering the domain name. Terefore the panellist could not find that the respondent had the relevant bad faith intent, nor infer such intent. Te complaint was denied.
It should be noted that a registrant may establish “rights and legitimate interest” by showing that the domain name is a marketable commodity in its own right, provided that its use does not impinge upon or take unfair commercial advantage of another’s established trademark rights.
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68